The Complainant is Hugo Boss AG of Mezingen, Germany, represented by Olswang LLP, United Kingdom of Great Britain and Northern Ireland ("UK").
The Respondent is guanjing of Tianjin, China. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with eName Technology Co., Ltd.(the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on September 2, 2014.
On September 3, 2014, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 5, 2014, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on September 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 8, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant and its related group companies is an international fashion group of companies in the high-end, luxury fashion retail market. The Complainant designs, manufactures, distributes and sells luxury, designer items of clothing, shoes, cosmetics, perfume, eyewear and other accessories under the brand names Boss, Hugo Boss, Boss Hugo Boss and/or Hugo Hugo Boss (the "HUGO BOSS marks").
The Complainant operates in the UK and internationally and has done so for numerous years. Products bearing the HUGO BOSS marks are sold all over the world, in 124 countries and at more than 6,100 points of sale. As at the end of 2010, there were 537 directly operated stores (including outlets). The number of stores operated via franchisees amounted to approximately 1,000 at the end of 2010, culminating in over 1,500 monobrand stores in the Complainant's group in over 80 countries.
The Complainant owns numerous trademark registrations for the word mark HUGO BOSS around the world, including in China where the Respondent appears to be located. The HUGO BOSS marks are registered in class 25 for goods including clothing and in class 35 for online retail services. The Complainant's business is in the design and sale of clothing and accessories, both in retail stores and online.
The Complainant is the registrant of a portfolio of domain names which incorporate the HUGO BOSS marks either alone or together with descriptive words, including ; ; ; .
The disputed domain names , , , and were registered on February 28, 2014, March 12, 2014, July 1, 2014, and March 12, 2014 respectively. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1) The Complainant owns numerous trademark registrations for the word mark HUGO BOSS around the world, including in China where the Respondent appears to be located. The trademark registrations date back over 15 years, all of which pre-date the registration dates of the disputed domain names.
2) Through its extensive use of the registered trademarks and brands, the Complainant has accrued significant goodwill and reputation in the HUGO BOSS marks.
3) Each of the disputed domain names consists of the trademark HUGO BOSS in its entirety in conjunction with a wholly descriptive component.
4) The disputed domain names include the Complainant's exact trademark HUGO BOSS together with the same descriptive words "store" and "outlet" for which the Complainant has domain name registrations. The Respondent has used further descriptive words ("cheap" and "sale") together with the Complainant's HUGO BOSS marks.
5) The use of the generic terms "cheap", "outlet", "sale" and "store" are entirely descriptive and therefore not relevant for the purposes of comparison. They do not distinguish the disputed domain names from the Complainant's HUGO BOSS marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:
1) The Respondent is not known to the Complainant (except for in previous UDRP proceedings) and has not been authorised to use, register or apply to register the HUGO BOSS marks (whether as a domain name or otherwise).
2) The Respondent is not authorised to offer the infringing websites which appear at the disputed domain names and which infringe the Complainant's trademark rights.
3) The Respondent cannot be commonly known by the disputed domain names (or any of them). The Complainant's rights (both registered and unregistered) have grown over many years and consumers will understand and recognise the HUGO BOSS marks as denoting only the Complainant (or parties authorised by the Complainant).
4) The Complainant submits that the Respondent will not be able to demonstrate any rights or legitimate interests in the disputed domain names. The Complainant contends that its HUGO BOSS marks are very well known and recognized and, as such, there can be no legitimate use by the Respondent in this case.
5) The Respondent has no public reputation or association with those marks and has not become commonly known by them. To the extent that it has acquired any such reputation or association (which is denied), it has acquired it through its unfair and intentionally misleading activities.
6) The Respondent has not, since securing registration of the disputed domain names made any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
7) The websites at the disputed domain names , and are being used to provide the exact services protected by the Complainant's registered trademarks (namely, a website advertising and offering for sale alleged Hugo Boss branded goods). The disputed domain names are virtually identical to the Complainant's domain names and include the Complainant's exact registered trademark HUGO BOSS, together with purely descriptive words. The Respondent is using websites at the disputed domain names , and to advertise and offer for sale alleged Hugo Boss branded goods to compete with the Complainant. Such use does not constitute a bona fide offering of goods and services.
The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:
1) The Complainant is globally famous and has had its registered trademarks for over 15 years. Given the international notoriety of the Complainant's marks, it is inconceivable that the Respondent was not aware of the Complainant or its activities when the disputed domain names were registered.
2) The Respondent appears to have systematically registered a collection of domain names that are virtually identical, or confusingly similar, to the Complainant's registered trademarks, in particular using the HUGO BOSS marks. There has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain names. The Complainant asserts that the Respondent is not and has never been an authorised seller of any Hugo Boss products.
3) The disputed domain names , , and display websites which are of very similar construction to the Complainant's websites and appear to offer the Complainant's products for sale. The Complainant cannot be certain whether the goods offered by the Respondent's websites are genuine Hugo Boss branded goods or whether they are counterfeit. To the extent that they may be counterfeit, there is a real risk that the sale of such goods, particularly from a website which incorporates the Complainant's trademarks both on the website and in the domain name, will cause irreparable damage to the Complainant's HUGO BOSS marks, goodwill and reputation.
4) In addition, these disputed domain names display the Complainant's details in the "About us" section of the websites, which adds to the confusion of consumers and demonstrates beyond any reasonable doubt that these disputed domain names are being used in bad faith.
5) Even though the Respondent has used the disputed domain names , and prior to receiving notice of this dispute, such use by the Respondent is not a bona fide offering of goods or services. The use by the Respondent is intended to mislead consumers into mistakenly believing that the disputed domain names (or any of them) are offered by or with the consent of the Complainant.
6) In the case of the disputed domain name (which does not currently resolve to a functioning website), given the previous decisions against the Respondent (see, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Guanjing / Daziran,WIPO Case No. D2014-0801 and Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong,WIPO Case No. D2012-1690), it is clear that this disputed domain name registration was made in bad faith in full knowledge of the Complainant's earlier rights, and that the Respondent's intention in registering the disputed domain name is the use it for infringing purposes. The disputed domain name includes the same distinctive element as the other disputed domain names, and other domain names that have previously been subject of successful UDRP proceedings by the Complainant against the Respondent. The websites at these other domain names are being, or have been, used for the purpose of exploiting the goodwill and fame of the Complainant's trademark in bad faith in order to improperly benefit the Respondent financially. It is therefore extremely likely that the Respondent would also use the disputed domain name for this purpose in bad faith, in violation of the Policy.
7) The repeated use of the Complainant's trademark, the display of hundreds of the Complainant's products throughout the websites associated with the disputed domain names, and the misrepresentation in the "About us" sections that the websites are operated by the Complainant, combine to create a false impression of an affiliation with or endorsement by the Complainant, which, trading as it does on the fame of the Complainant's trademarks, cannot support a finding of legitimate use.
8) The Complainant asserts that the only reason that the Respondent would have sought to register and use the disputed domain names consisting of the HUGO BOSS marks plus the generic words "store", "cheap" and "outlet" is that the Respondent knew of the Complainant's trademarks and wanted to trade on the Complainant's renown to lure consumers to its sites for the purpose of selling Hugo Boss merchandise, or otherwise profiting from consumer confusion. The Complainant states that the Respondent is exploiting the goodwill and fame of the Complainant's trademark in bad faith in order to improperly benefit the Respondent financially and that these activities demonstrate bad faith registration and use of the disputed domain names in violation of the Policy.
9) The Complainant cannot control the nature of or transactions which result from the websites at the disputed domain names and there is a real risk that the Complainant's goodwill and reputation will be tarnished by the provision of a website or sales services through the websites at the disputed domain names which do not mirror the quality of the Complainant's brand and business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not respond.
After considering the circumstances of the present case and the submissions from the Complainant, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that:
(a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English;
(b) there is evidence adduced by the Complainant that the websites at the disputed domain names, , and are in the English language, which indicates that the Respondent is conversant with the English language;
(c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.
Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the HUGO BOSS marks in connection with clothing, shoes, cosmetics, perfume, eyewear and other accessories. The Panel finds that the Complainant's HUGO BOSS marks are widely known for clothes and other fashion items offered by the Complainant.
In assessing the degree of similarity between the Complainant's trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademarks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.
The disputed domain names incorporate in the entirety the Complainant's registered HUGO BOSS marks, with the addition of the descriptive terms such as "cheap", "outlet", "sale" and "store" which are insufficient to distinguish the disputed domain names from the Complainant's marks. Furthermore, it is a well-accepted principle that the addition of generic Top-Level Domains (gTLDs) such as ".org" and ".net" may be disregarded.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's HUGO BOSS marks; and (b) the lack of distinguishing factors between the disputed domain names and the Complainant's marks, the Panel therefore finds that the disputed domain names are confusingly similar to the HUGO BOSS marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms "cheaphugobossoutlet", "hugobossoutletsale", "hugobossoutletsale", and "hugobossstore";
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating the HUGO BOSS marks;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
(4) the Complainant and its HUGO BOSS marks enjoy a widespread reputation and high degree of recognition in connection with clothes and other fashion items and the HUGO BOSS marks are registered in many countries all over the world, including China in which the Respondent appears to reside. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the HUGO BOSS marks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the wide spread reputation of the Complainant and its HUGO BOSS marks, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. A simple search on the Internet would reveal the presence of the Complainant's trademarks and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with an intent to create an impression of association with the Complainant and its products.
The fact that the Respondent has chosen to register four domain names all incorporating the Complainant's HUGO BOSS marks in their entirety lends weight to the argument that the Respondent has prior knowledge of the Complainant's business presence and its marks. This argument has not been rebutted by the Respondent.
Where the Respondent has chosen to register disputed domain names that are confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, there is evidence which shows that the Respondent has registered the disputed domain names for the purpose of advertising and offering for sale alleged Hugo Boss branded goods (without the Complainant's consent) to compete with the Complainant. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of his/her use of the disputed domain names.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's HUGO BOSS marks and a lack of plausible explanation for the choice of incorporating the Complainant's famous mark in the disputed domain names, the link by the Respondent of the disputed domain names to websites which sell alleged Hugo Boss branded goods without being authorized or approved by the trademark owner or its licensees and without any disclaimer or statement indicating the Respondent's (lack of a) relationship with the Complainant, and to inactive websites is certainly a relevant factor indicating bad faith registration and use.
The Panel notes that the website at the disputed domain name appears to be inactive. In accordance with established precedent, the Panel finds that the passive holding of said disputed domain name does not as such prevent a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2.
Thus, the Panel finds for the Complainant on the third part of the test. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: October 22, 2014
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